# Amicus Curiae Brief — Microsoft Corp. v. AT & T CORP.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0243%3A28

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2007
- **Citation:** 550 U.S. 437

## Text

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No. 05-1056 ORICE Gr IME CLERK |

IN THE

Supreme Court of the Anited States

MICROSOFT CORPORATION,
Petitioner,

Vv.

AT&T Corp.,
Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF SHELL OIL COMPANY AS
AMICUS CURIAE IN SUPPORT OF PETITIONER

RICHARD L. STANLEY
Counsel of Record

JOHN D. NORRIS
HOWREY LLP

1111 Louisiana St., 25” Floor
Houston, TX 77002

(713) 787-1400

Attorneys for Amicus Curiae
Shell Oil Company

——————— ee ————————————————ESee
WiILSON-EPES PRINTING CO., INC. — (202) 789-0096 — WASHINGTON, D.C. 20001

TABLE OF CONTENTS

I. Congress’ Intended Meaning For “Component”
And “Supplied” Is Best Ilustrated By Examining
Why Process And Method Patents Are Not
Ie Be I TIE siciaredbiinstsiecesaiihapesialaideiulibaibtciensnndeintnbingndiuie 4

Il. For Purposes of 35 U.S.C. § 271(f), Processes Do
Not Have “Components” And Thus
“Components” Cannot Be Intangible....................00:-ss00 6

A. By Mischaracterizing Software As A Process,
The Federal Circuit in Eolas Avoided
Construing The Relevant Statutory Language ........... 7

B. 35 U.S.C. § 271(c) Confirms That Congress
Did Not Intend “Components” To Include
Materials Or Apparatus Used In A Patented
Se GI sccisiniadininesticnisiiuiediitaiguinidsinpiantiniivcanntenes 9

C. The Other Justifications In Eolas For
Extending § 271(f) To Intangible Patented
Processes Are Incorrect And Improper..................... 14

III. Under A Proper Construction Of § 271(f), Process
Steps And Other Intangible Information Are Not
“Components” And Thus Cannot Be “Supplied”’........... 18

I cncrenecticanierstqnennninainicinmnemnapinennetnninintti 27

TABLE OF AUTHORITIES

Page(s)
CASES
AT&T Corp. v. Excel Communications, Inc.,
172 F.3d 1352 (Fed. Cir. 1999)..........cc-csscccsecsccescoceseosecees 8
Bayer AG v. Housey Pharms., Inc.,
340 F.3d 1367 (Fed. Cir. 2003) ...........cccscsccecceneeseeee 20, 21
Brown v. Duchesne,
RL eee 26
Connecticut Nat. Bank v. Germain,
Es PD cectcinitihtidisnmncsnicaitdaninestiitnininninnintiis 11
Deepsouth Packing Co. v. Laitram Corp.,
RE tie: SIU UT xccsicsnnisisinsennsiienialinatiiaitcianiannenes 15, 16, 23
Dowagiac Mfg. Co. v. Minn. Moline Plow Co.,
a Rs Ne CI ceiticecpictnninieninnitinitmeananmnmnanne 26
Enpat, Inc. v. Microsoft Corp.,
6 F.Supp.2d 537 (E.D. Va. 1998) .00......:..ccecceeseseseseeeees 12
Eolas Technologies, Inc. v. Microsoft Corp.,
399 F.3d 1325 (Fed. Cir. 2005)..........ccscesecceesereeeees passim
F. Hoffman-La Roche Ltd. v. Empagran S.A.,
SER SREE Wien rar oe 26
Griffin v. Oceanic Contractors, Inc.,
a a citrenintalcinniticiciiiiiahinttinnitinnnencninicion 14
In re Alappat,
PE ee 8

‘3

Joy Technologies, Inc. v. Flakt, Inc.,

Fe Fr rs Ge Fa ccinecrntentcnstnngnintpeniestciciinictiines 16
Murray v. Schooner Charming Betsy,

es Cr I a iicictiisnitessipictemimtecnencaiiticninsiiniiiianmie 26
NTP, Inc. v. Research in Motion, Ltd.,

418 F.3d 1282 (Fed. Cir. 2005)................000- 5, 16, 19, 20
Parker v. Flook,

Pe a ee PE sccttssicinseccicsctpinnsiniipeieieuieiiatecnpuiiiininintiiinel 18
Pellegrini v. Analog Devices, Inc.,

375 F.3d 1113 (Fed. Cir. 2004) 0... eceeccceeeeeeeeeees 20

Sony Corp. of Am. v. Universal City Studios, Inc.,
EG Ce itaisciennsncscsicsitistipisiessitliniidliiscenniibaineiiamian’ 18

Standard Haven Prods., Inc. v. Gencor Indus., Inc.,
953 F.2d 1360 (Fed. Cir. 1992) .00.......eecceeeseeeeceeeee passim

State Street Bank & Trust Co. v. Signature Fin.
Group, Inc.,

149 F.3d 1368 (Fed. Cir. 1998) 000.00... eceeeceseeseseeseeeeeeees 8
Sullivan y. Stroop,

Fe OP cicceectocnsnnnicintessnitudinisctspnaiiuahiiniinnibeaniiiicnie 11
TRW Inc. v. Andrews,

ee, ee ictetiehnsnscimnntiiiiitiniiatpiaiitidlbindtipteeiiie 1]

Union Carbide Chemicals v. Shell Oil Co..,
425 F.3d 1366 (Fed. Cir.), reh’g denied,
434 F.3d 1357 (Fed. Cir. 2006) .00...........ececeseeeeeseeee passim

United States v. Dubilier Condensor Corp.,
ee ee Oe icticitiiencnrscpnemnineniattccietiianiatiiiaiiiitininioien 18

iti

WMS Gaming, Inc. v. Int'l Game Tech.,

184 F.3d 1339 (Fed. Cir. 1999) ........cccsssssscsssecsusscsssesnsecens 8
STATUTES
Ie ie i inieiicedhec ites alii iii 7, 9,19
FERRED PSR eran vee oreo Sa ane ee 16
TEER ERENT O EN OOP TITS 7
es Oe Ar ee icicntisacniisenincttahiaticieliealelieiadasaniinal passim
ee Ns Oe ED ercinnsetdnnecansntnlinntindnsittitabianiimaniiiidl passim
i passim
OTHER

Seam. BR. 9B-GEB (19OG) aencenncveenvovenssereneorsnnermnnercsnorennen 10
130 Cong. Rec. H10525 (1984)......:..ssscssesssssesseeccneseeneeenveeens 14
132 Congy. i ncisiniitihclinsinidisicbitnisioimripises 15
132 Congr. Rec. S17 (1986) .....e.cceesssesssesssssssneessesssseceseeesses 15
Manual of Patent Examining Procedure,

§ 2106.1V.B.1.a (8 ed. 2001).....c.ccecccccesssecsessessnessuteeeeees 8

Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS), Including Trade In
Counterfeit Goods, Apr. 15, 1994, Marrakesh
Agreement Establishing the World Trade
Organization, Annex 1C, Legal Instruments —
Results of the Uruguay Round vol. 31,33 LL.M. .
Rar aTEITII stisvcnstiiuiiinssiinidnciepinestlahebidnceidenanisiiaibdesinetiianadnienite 25

European Patent Convention, Art. 52 (2006)................. 25, 26
iv

B. Lehman, Overseas Stretch, Legal Times (July 11,

J. Farrand, Territoriality and Incentives Under the
Patent Laws: Overreaching Harms U.S.
Economic and Technological Interests, 88 J. Pat.
& Trademark Off. Soc. 761 (Sept. 2006). .............:sc-se0 13

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IN THE

Supreme Court of the Anited States

No. 05-1056

MICROSOFT CORPORATION,
Petitioner,
Vv.

AT&T Corp. ,
Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF SHELL OIL COMPANY

INTEREST OF AMICUS

Amicus curiae, Shell Oil Company, is involved in
many aspects of the U.S. patent system, and thus is directly
affected by how the U.S. patent laws are applied to both
patentees and potential defendants in U.S. courts.! A proper
interpretation of when and how infringement liability may be
imposed under U.S. patents concerning importing and
exporting activities among multiple countries has critical
relevance to business decisions involving such things as
manufacturing and shipping locations, supply contracts,
subcontracting, and indemnity agreements. As such, the
Federal Circuit’s recent interpretations of 35 U.S.C. § 271(f)
have created critical legal and business concerns of

! Counsel for amicus curiae authored this brief in its entirety. No person
or entity other than amicus curiae or its counsel made a monetary
contribution to the preparation or submission of this brief. Both
petitioner and respondent have filed with the Court blanket consents for
all briefs amicus curiae.

2

exceptional importance for Shell and any other company
involved in multinational transactions involving technology.

The Federal Circuit’s decision in Eolas Technologies,
Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005),
construing the statutory term “component” and its decision in
this case construing the term “supplied” have rightfully
garnered considerable attention within the domestic software
industry. However, the enormous potential infringement
liability created by the Federal Circuit’s erroneous
construction of § 271(f) extends well beyond these parties
and the software technology at issue. The Federal Circuit’s
incorrect legal pronouncements in Eolas also directly caused
that court to extend liability under § 271(f) to all U.S. method
and process patents performed overseas. Union Carbide
Chemicals v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir.), reh’g
denied, 434 F.3d 1357 (Fed. Cir. 2006). Based on Eolas, the
Federal Circuit has created infringement liability under U.S.
law not only with respect to software developed in the United
States that is later copied and incorporated into foreign .
products and systems covered by U.S. patents, but also with
respect to any material or apparatus exported from the United
States for use in foreign processes or methods.

Shell’s interest in properly construing § 271(f) arose
from its involvement as a party in Union Carbide. In that
case, unlike in Eolas and this case, the only asserted claim
covered a process, not a product or system. Applying
existing law, the district court ruled that there could be no
liability under § 271(f), and hence no damages, arising from
Shell supplying unpatented catalysts from the United States
for use in ethylene oxide production processes run by third
parties entirely outside this country. However, in an opinion
by the same judge that authored Eolas, the Federal Circuit
reversed in Union Carbide, reiterating its view that “every
component of every form of invention deserves the protection
of 35 U.S.C. § 271(f); ie., that ‘components’ and ‘patented
inventions’ under §271(f) are not limited to physical

3

machines.” 425 F.3d at 1379. As shown herein, those
conclusions are wrong.

Because Shell reached a business resoiution of its
particular controversy with Union Carbide before filing its
own petition to this Court, the Federal Circuit’s decision in
Union Carbide was left as the controlling precedent on the
applicability of § 271(f) to process patents. As a result, that
decision remains applicable to Shell and everyone else.
Collectively, the Federal Circuit’s decisions in Eolas, AT&T,
and Union Carbide reflect a fundamental misunderstanding
of §271(f) which, if not changed by this Court, will
adversely affect not only the nation’s software industry, but
every company and industry operating domestically that
supplies any material and apparatus used in processes
performed by their overseas customers.

Specifically, the decision in Eolas is the source of the
Federal Circuit’s serious misconstruction of § 271(f). As
explained herein, the flawed legal conclusions in Eolas were
rendered outside of an actual controversy in that case, and are
directly contrary to the statutory language, Congress’ intent,
and even prior precedent of the Federal Circuit itself. As
recognized by the grant of certiorari by this Court, this case
presents the appropriate vehicle by which to restore the
meaning of the terms “component” and “supplied” in
§ 271(f) to what was understood and enacted by Congress.
Because the process patent scenario of the Union Carbide
case aptly illustrates why the term “component” in § 271(f)
does not apply to process steps or to other intangibles, Shell
is uniquely positioned to provide additional arguments on the
issues before this Court that have not been recognized or
adequately addressed by the parties or the other amici.

4
ARGUMENT

I. Congress’ Intended Meaning For “Component”
And “Supplied” Is Best Illustrated By
Examining Why Process And Method Patents
Are Not Subject To § 271(f)

The view adopted by the Federal Circuit in Eolas as
to the scope of the statutory term “component” in § 271(f)
was deemed controlling in this case, and thus did not receive
any independent analysis. Pet. App. 4a. Necessarily,
therefore, Shell addresses the Federal Circuit’s faulty
reasoning in Eolas. By mischaracterizing software as a
process and wrongly assuming that processes are entitled to
the protections of § 271(f), the Federal Circuit in Eolas
misconstrued the term “component” and then compounded
that legal error in this case by further misconstruing the term
“supplied” as it applies to the software at issue.

Simply put, the Federal Circuit seriously erred when
it declared in Eolas that “every form of invention eligible for
patenting falls within the protection of section 271(f)” and
that patented processes have “components” within the
meaning of § 271(f). 399 F.3d at 1339. As shown herein,
such statements are wrong as a matter of law because the
existing statutory language does not treat patented processes
as having “components” and thus was never intended to
extend the “protection” of § 271(f) to process patents.
Indeed, the Federal Circuit itself had previously held that
§ 271(f) was not implicated when an apparatus recited in a
process claim is exported for use in performing a patented
process overseas. Standard Haven Prods., Inc. v. Gencor
. Indus., Inc., 953 F.2d 1360, 1374 (Fed. Cir. 1992) (noting the
patent “claims a method for producing asphalt, not the
apparatus for implementing that process”). Notably, the
Federal Circuit’s analysis in Eolas never cited that directly

5

contrary precedent, and reached the opposite result without
even attempting to interpret the actual statutory language.

The single § 271(f) question presented in Eolas—
whether software code made in the United States and
exported abroad is a “component of a patented invention”—
did not implicate or require deciding whether process patents
are covered by § 271(f). Undoubtedly adhering to the court’s
prior holding in Standard Havens, Eolas only relied on its
asserted product claim for its § 271(f) position, and therefore
neither party raised or briefed whether the statute applied to
patented processes (which surely contributed to the Federal
Circuit’s unbounded, unprincipled, and incorrect statutory
analysis). Nevertheless, en route to declaring that the
software exported by Microsoft on “golden master disks”
could properly be held to be a “component” of the asserted
computer product claim, the Federal Circuit incorrectly
declared that software was itself a process and that “every
component of every form of invention deserves the
protection of section 271(f).” 399 F.3d at 1339.

While the Federal Circuit in Eolas was unable to
“construct a principled reason for treating process inventions
different than structural products” (399 F.3d at 1339), the
statutory language does exactly that in both 35 U.S.C.
§271(c) and 35 U.S.C. §271(f). By distinguishing “a
component of a patented machine, manufacture,
combination, or composition” from “a material or apparatus
for use in practicing a patented process,” the statutory
language establishes that Congress did not consider or treat
patented processes as having “components” and thus did not

2 In a decision issued after Eolas but before Union Carbide, the Federal
Circuit in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1321-23
(Fed. Cir. 2005), adhered to Standard Havens while distinguishing Eolas,
at least for method claims. Clearly, therefore, the Federal Circuit's
decisions in NTP and Standard Havens are utterly irreconcilable with
Eolas, AT&T, and Union Carbide as to their underlying interpretations of
§ 271(f).

6

impose any liability under § 271(f) where materials or
apparatus used in performing patented processes are supplied
in or from the United States. Thus, the Federal Circuit in
Eolas not only ignored its own binding precedent and issued
an advisory opinion on a subject unrelated to the parties’
actual controversy, but the Federal Circuit’s flawed
assumption that § 271(f) applies equally to patented products
and processes is legally insupportable.

Properly construed, the infringement statute itself
shows that Congress did not intend or authorize that result.
Moreover, once it is realized that Congress did not
contemplate that the intangible steps of a process could be
“components” for purposes of §271(f), the question
presented here as to whether, when, and why software can be
a “component” of a patented product or system invention .
becomes much easier to resolve. First, unless software is
embodied in a specific physical or tangible structure, it
cannot be a “component” of a patented invention for
purposes of § 271(f). Second, to the extent that such physical
manifestations of software can be a “component” of a
patented product or system, any such “component” can only
be “supplied” by creating, sending, transmitting, or
forwarding the specific physical or tangible structure on
which the software code is embodied.

Il. For Purposes Of 35 U.S.C. § 271(f), Processes
Do Not Have “Components” And Thus
“Components” Cannot Be Intangible

For purposes of § 271(f), the Federal Circuit agreed
that Eolas’ “patented invention” was a “computer program
product.” 399 F.3d at 1339. However, rather than confining
its analysis to deciding whether Microsoft’s software was a
“component” of Eolas’ claimed “computer program
product,” the Federal Circuit improperly undertook to
establish that “every component of every form of invention
deserves the protection of section 271(f).” 399 F.3d at 1339.
Of course, the proper judicial inquiry should not have been

7

whether such protection is “deserved,” but whether Congress
provided such protection. When properly construed, the
statutory language shows that Congress clearly did not.

A. By Mischaracterizing Software As A
Process, The Federal Circuit in Eolas
Avoided Construing The Relevant
Statutory Language

The Federal Circuit in Eolas began from the premise
that it had to decide whether software code made in the
United States and exported abroad is a “component[] of a
patented invention” under § 271(f). 399 F.3d at 1338.
Virtually from the outset of its analysis, however, the Federal
Circuit improperly substituted determining what could be a
“patented invention” for the required inquiry into what
Congress provided could be a “component” of a patented
invention.

The Federal Circuit held that “patented invention” in
§ 271(f) should be broadly construed as including “any new
and useful process, machine, manufacture or composition of
matter.” See 399 F.3d at 1338-39 (citing 35 U.S.C. § 101).
According to the court, “software code alone qualifies as an
invention eligible for patenting under these categories, at
least as processes.” 399 F.3d at 1339. However, that
simplistic view of software is fundamentally wrong, and
directly caused the Federal Circuit’s distortion of the statute
as applied to both software and all patented processes.

Simply put, software is not a process. While software
may represent a patentable process, or may be part of a
patentable process, the software code itself is not a process.
Moreover, that is true whether software is considered to be
merely “intangible 0’s and 1’s” or whether the software is
embodied on a tangible, physical structure such as a hard
drive or computer disk. Indeed, making, selling, or copying a
computer device containing software cannot directly infringe
a process claim under § 271(a). In order for such a process

8

claim to be infringed, the software representing the claimed
process would have to be run or used in a computer. Hence,
the Federal Circuit in Eolas was wrong in characterizing
software code as being a process and thus erred in analyzing
the § 271(f) issue from that perspective.

Nothing cited by the Federal Circuit in Eolas supports
its misplaced premise that software is a process. In re
Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994), simply held
that “a computer operating pursuant to software may
represent patentable subject matter.” However, software
installed on a physical computer structure is a specific-
purpose apparatus for purposes of the patent law. See, e,¢.,
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348
(Fed. Cir. 1999).3 The method claims at issue in AT&T
Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1359
(Fed. Cir. 1999), were patentable “processes” not because
they were software, but because they produced “a useful,
concrete, and tangible result” (citing State Street Bank &
Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1374
(Fed. Cir. 1998)). Indeed, the portion of the PTO’s Manual
of Patent Examining Procedure (“MPEP”) cited by the
Federal Circuit explains that “[s]ince a computer program is
merely a set of instructions capable of being executed by a
computer, the computer program itself is not a process.” See
399 F.3d at 1339 (citing MPEP § 2106.IV.B.1.a, at 2100-13
(8™ ed. 2001)).

3 For that reason, the Federal Circuit’s rationalization that “a disk is
merely a container that facilitates physical handling of software, like
bottles for liquids or pressurized cylinders for gases” (Pet. App. 8a) is
disingenuous. Liquids or gases do not rearrange or alter the structure of
the containers in which they are inserted. Moreover, because software is
patentable only because a physical computer structure on which the
software is installed becomes a specific-purpose apparatus for purposes
of the patent law, the structural computer device containing the software
is not merely a container, but is the only legally cognizable embodiment
of the software.

9

By characterizing “software code claimed in
conjunction with physical structure, such as a disk” as being
a “process” for purposes of § 101, the Federal Circuit
seriously erred. See 399 F.3d at 1339. Software coupled
with a physical structure, such as a disk or memory, might be
patentable as a machine, manufacture or composition of
matter. However, whether tangible or intangible, software
itself is not a process, but merely represents a process. In any
event, whether or why software may be patentable in its own
right was not even the right question.

Properly analyzed, the relevant issue in Eolas (and
thus in this case) should not have been whether software
could be a “patented invention,” but whether software, after
being exported on golden disks and copied onto computers in
foreign countries, is a “component” of a patented computer
product invention that had been “supplied” from the United
States for purposes of §271(f). By mischaracterizing
software as a process, the Federal Circuit never resolved the
true issues. More importantly, the Federal Circuit never
recognized or analyzed the statutory language revealing
Congress’ specific meaning for the term “component.”

B. 35 U.S.C. § 271(c) Confirms That Congress
Did Not Intend “Components” To Include
Materials Or Apparatus Used In A
Patented Method Or Process

The Federal Circuit’s erroneous assumptions in Eolas
that anything that could be a “patented invention” could be a
“component” of a patented invention and that all “patented
inventions” are composed of “components” are directly
refuted by the existing infringement statute. As shown
below, Congress never used the term “component” when
referring to patented processes or methods, and clearly
distinguished “a component” from “a material or apparatus
for use in practicing a patented process.” In its desire to
announce its own view of proper patent policy, the Federal
Circuit’s assumed scope of the term “component” completely

10

disregards the statutory language and the clear policy choices
already made by Congress.

In drafting § 271(f)(2), Congress adopted language
directly from 35 U.S.C. § 271(c), which defines liability for
contributory infringement for acts within the United States.
See Sen. R. 98-663, at 7 (1984). Given that linked heritage,
it is highly instructive to examine the language in § 271(c)
that was not incorporated by Congress into § 271(f)(2).
Section 271(c) provides:

Whoever offers to sell or sells within the
United States or imports into the United States
a component of a _ patented machine,
manufacture, combination, or composition, or
a material or apparatus for use in
practicing a patented process, constituting a
material part of the invention, knowing the
same to be especially made or especially
adapted for use in the infringement of such
patent, and not a staple commodity of
commerce suitable for substantial
noninfringing use, shall be liable as a
contributory infringer.

As shown by comparing the italicized and bolded passages
ebove, § 271(c) distinguishes between “a component of a
patented machine, manufacture, combination, or
composition” and “a material or apparatus for use in
practicing a patented process.” On its face, the statutory
language unmistakably reveals that Congress did not treat
processes as having “components” and did not intend
“component” to include “a material or apparatus for use in
practicing a patented process.”

If the Federal Circuit’s assumptions in Eolas had
been correct that “patented invention” includes “patented
process” and that a “component” could be a material or
apparatus used in performing a patented process or even a

1]

step or act of such patented process, then Congress would not
have specified separately in §271(c) that contributory
infringement included selling or importing “a material or
apparatus for use in practicing a patented process.” To avoid
rendering the latter phrase entirely meaningless, “a
component” must be entirely distinct from “materials or
apparatus for use in practicing a patented process.”

Notably, Congress incorporated the concept of
‘component” into § 271(f) but did not include the “material
or apparatus for use in practicing a patented process”
language. That drafting choice must be interpreted as
intentional and material. Clearly, the language imported by
Congress from §271(c) reflects its understanding that a
“component” will exist only in patented inventions that are
themselves a machine, manufacture, combination, or
composition. Equally true, the statutory language reflects
Congress’ understanding and intention that patented
processes do not have “components.” Just as § 271(c) does
not use “component” with respect to a patented process,
Congress incorporated that same understanding of
“component” in § 271(c) when drafting § 271(f). See, e.g.,
Sullivan v. Stroop, 496 U.S. 478, 484 (1990) (normal rule is
that “identical words used in different parts of the same act
are intended to have the same meaning”).

Moreover, Congress specifically enacted 35 U.S.C.
§ 271(g) to address when there could be liability under U.S.
patent law for practicing U.S. patented processes in other
countries. As one court recognized, § 271(g) shows
Congress knew how to protect against foreign use of process
patents, and chose to limit such protection only to uses which

4 See, e.g., TRW Inc. v. Andrews, 534 U.S. 19,31 (2001) (“it is a cardinal
principle of statutory construction that a statute ought, on the whole, to be
so construed that, if it can be prevented, no clause, sentence, or word
shall be superfluous, void, or insignificant”); Connecticut Nat. Bank v.
Germain, 503 U.S. 249, 253 (1992) (“courts should disfavor
interpretations of statutes that render language superfluous”).

12

result in products introduced back into the United States. See
Enpat, Inc. v. Microsoft Corp., 6 F.Supp.2d 537, 539 (E.D.
Va. 1998) (“had Congress intended to prohibit U.S.
companies from exporting products which allow foreign
companies to make unauthorized use of patent methods, it
could have done so in clear, unambiguous language like that
found in § 271(g)”).

Contrary to the Federal Circuit’s unsupported
assumptions in Eolas, sound policy supports Congress’
decision not to expand U.S. patent law to every patented
process performed outside the United States. When all or
most of the components of a patented product are
manufactured domestically, or where a component specially
made or adapted for use in a patented product is made
domestically, § 271(f) protects a patentee from acts in this
country affecting the domestic market in the patented
product. However, in many process patent cases, like
Standard Havens and Union Carbide, the exported material
or apparatus is not patented, and no product claim could be
asserted. Making or selling the exported material or
apparatus in this country could not infringe.

If allowed to stand, the Federal Circuit’s view of
§ 271(f) adopted in Eolas, this case, and Union Carbide
would give U.S. patent protection to unpatented products or
apparatus under the guise of enforcing a U.S. process patent
against a process performed entirely in a foreign country.
Absent any effect in a U.S. market served by the U.S. process
patent holder, such as when a product of a patented process is
later imported into this country, no interference by U.S. law
in the non-U.S. markets served by the foreign processes is
justified. That role must be reserved for the foreign patent
systems. To avoid such serious extraterritoriality concerns,
Congress properly did not include the “supplying materials
or apparatus for use in practicing a patented process”
language in § 27i(f) and thus confined U.S. liability for use
of foreign processes to the circumstances covered by
§ 271(g).

13

It should now be clear that this case presents issues
extending well beyond the domestic software industry.
Every industry and company active in international
commerce is now faced with new potential liability never
authorized by Congress. See B. Lehman, Overseas Stretch,
Legal Times (July 11, 2005) (explaining why Eolas “goes
too far”); J. Farrand, Territoriality and Incentives Under the
Patent Laws: Overreaching Harms U.S. Economic and
Technological Interests, 88 J. Pat. & Trademark Off. Soc.
761 (Sept. 2006). Having justifiably relied on Standard
Havens and the plain language of the statute, companies will
now become strongly disinclined to invest in existing or new
U.S. manufacturing, research, or distribution facilities for
materials or apparatus to be used in foreign processes. Such
a significant burden on the country’s economy should only
have been enacted by Congress, not imposed unilaterally by a
federal appellate court first creating and then adopting its
own dicta.

If the unwarranted extraterritorial reach of U.S. law
created by the Federal Circuit’s decisions in Eolas, this case,
and Union Carbide is not undone, enormous amounts of jobs
and investment dollars will be relocated outside the United
States. As one concrete example, the Federal Circuit’s
decisions misconstruing § 271(f) directly affected Shell’s
decision between expanding its existing catalyst production
plant in California, or building a new facility outside the
United States to avoid any possible liability under U.S. patent
law. Similar investment decisions about whether and where
to build, manufacture, do research, and operate within the
United States will be made by countless other companies
involved in international commerce.

Nevertheless, the district court in this case dismissed
such concerns as better addressed through Congressional
action rather than through a judicial engraftment onto
§ 271(f). Pet. App. 37a-38a. Similarly, the Federal Circuit
declared that “possible loss of jobs in this country is not

14

justification for misinterpreting a statute to permit patent
infringement” and that “it is enough that Congress intended
that the language it enacted would be applied as we have
applied it.” Pet. App. 10a-lla (quoting Griffin v. Oceanic
Contractors, Inc., 458 U.S. 564, 576 (1982)). However, the
Federal Circuit got it exactly backwards—both as to the
proper statutory interpretation and as to Congress’ intent. As
shown, the Federal Circuit misinterpreted § 271(f) to find
liability under U.S. patent laws where none was provided or
intended by Congress. Thus, rather than being limited to
resorting to Congress to remedy any dissatisfaction with the
Federal Circuit’s statutory construction, this Court is
authorized and should be obligated to restore § 271(f) to its
proper scope, as originally intended by Congress.

C. The Other Justifications In Eolas For
Extending § 271(f) To Intangible Patented
Processes Are Incorrect And Improper

In light of the express statutory language, the Federal
Circuit’s other rationalizations and justifications set forth in
Eolas as to why § 271(f) should cover patented processes do
not support that conclusion. For example, the Federal Circuit
in Eolas cited the legislative history of § 271(f), but on its
face, the single passage quoted in Eolas only applies to
patented products:

[Section 271(f)] will prevent copiers from
avoiding U.S. patents by supplying
components of a patented product in this
country so that the assembly of the
components may be completed abroad.

399 F.3d at 1340 (citing 130 Cong. Rec. H10525 (1984)).
Because only patented products are mentioned, the above
history does not support the Federal Circuit’s declaration that
Congress was “correcting a loophole for all forms of patented
inventions.” 399 F.3d at 1340. Indeed, because § 271(c)
shows that Congress viewed only “patented products” to

15

have “components,” the opposite conclusion from the one
reached in Eolas should have been compelled.

The conclusion that § 271(f) does not protect U.S.

process patents is also confirmed by the legislative history of
35 U.S.C. § 271(g), passed four years later in 1988. In 1986,

Senate reports discussing the bill leading to § 271(g) stated:

The bill does not attempt to prevent the use of
the [patented] process in another country. If
the U.S. process patentholder has not obtained
a similar patent in another country, he has and
should have no right by virtue of his U.S.
patent to prevent anyone from using the
process in that country. 132 Congr. Rec. $17,
386-02, at 6 (1986).

Current law ... fails to protect against the use
of the process in another country followed by
importation into and use or sale within the
United States of the resulting products.
Simply using the process in a foreign country
where the U.S. inventor does not have a patent
is perfectly legitimate; the measure we are
considering prohibits only the subsequent
importation, use and sale of the resulting
products in this country. 132 Congr. Rec.
$15, 049-01, at 5 (1986).

If §271(f) truly protected against the use of patented
processes in foreign countries in 1984, Congress would not
have stated only two years later that existing law contained
no such protection. Thus, the only protection against use of
patented processes in foreign countries is limited to that
subsequently enacted in § 271(g).

Moreover, even if § 271(f) did more than overrule
Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518
(1972), the patents in that case did not claim any processes

16

using the disclosed apparatus. In Deepsouth, this Court held
that patents on machinery for deveining shrimp were not
infringed by selling the unassembled parts of the accused
device for later assembly and use in Brazil. Jd. at 526-32.
Whether assembled or not, the sale or supply of the
components or materials needed to perform a patented
process has never infringed the process patent, even where
such sale or supply occurs or the resulting apparatus is
assembled in the United States. See Joy Technologies, Inc. v.
Flakt, Inc., 6 F.3d 770, 774-76 (Fed. Cir. 1993) (citing
Standard Havens and other cases).

Nothing in § 271(f) affected or changed that law.
Even if a party supplies in or from the United States all
materials or every piece of equipment needed to build or
operate an apparatus for performing a claimed process, there
has never been any statutory basis for imposing liability
under a U.S. process patent where the parts are assembled
and used in a foreign country. Even when such items are
combined, the “combination” yields an apparatus, not the
process. As explained in Joy, nothing is being “combined
outside the United States in a manner that would infringe the
[process] patent if such combination occurred within the
United States.” See also NTP, 418 F.3d at 1322 (supplying
devices and products “is not the statutory ‘supply’ of any
‘component’ steps for combination into ... patented
methods”).

Yet, the Federal Circuit in Eolas incorrectly declared
that “a ‘component’ of a process invention would encompass
method steps or acts.” 399 F.3d at 1339 (citing 35 U.S.C.
§ 112, 96). However, § 112, 96 only addresses how an
“element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof.” It
does not even contain the term “component” at all. The
Federal Circuit had no basis for equating an “element” under
§ 112, | 6 with a “component” under § 271(f). The former is
Gertes to ew an Gentes any So Cust, alle Ge kee

17

governs only when supplying parts of an accused product
gives rise to infringement liability. Those distinct statutory
provisions and terms are entirely unrelated, and cannot

support equating “element” of a patent claim with a
“component” of an accused device for purposes of § 271(f).

Hence, the Federal Circuit in Eolas fundamentally
erred in concluding that “[the] statutory language did not
limit § 271(f) to patented ‘machines’ or patented ‘physical
structures” and when it further declared that “the statute did
not limit § 271(f) to ‘machine’ components or ‘structural or
physical’ components.” See 399 F.3d at 1339. That is
exactly what Congress did. As confirmed by § 271(c),
Congress associated “components” only with a “machine,
manufacture, combination, or composition.” Without
question, those are all physical structures or apparatus.
Moreover, by not using “component” when referring to a
patented process, Congress thus limited the coverage for
processes under § 271(c) to “a material or apparatus for use
in practicing a patented process.”

By omitting the latter language from § 271(f),
Congress left no doubt that § 271(f) did not cover anything
supplied for use in a patented process outside the United
States. The statutory language reflects that one cannot
supply or cause to be supplied a process step. Process steps
are clearly intangible, and they are only performed, not
supplied. More importantly, that same reasoning applies to
any other intangible item, not just process steps. As used by
Congress, “components” should be limited to physical or
tangible items that can be supplied and combined to make
patented products overseas, whether or not such modifiers
appear in the statute. Properly interpreted, no other
limitation on “component” needed to be expressed by
Congress to have excluded patented processes and methods
from the scope of § 271(f).

It is not the Federal Circuit’s task or privilege to set
“sound” patent policy for this country. Such difficult policy

18

formulations — including defining what acts should constitute
infringement -- belong exclusively to Congress. See, e.g.,
Parker v. Flook, 437 U.S. 584, 595-96 (1978); Sony Corp. of
Am. v. Universal City Studios, Inc., 464 U.S. 417, 456
(1984); United States v. Dubilier Condensor Corp., 298 U.S.
178, 198-99 (1933). Indeed, this was not even a situation
where Congress had yet to speak. Nevertheless, the Federal
Circuit in Eolas ignored Congress’ policy choices already
embodied in the infringement statute, and incorrectly and
impermissibly substituted its own judgment for that of
Congress under the guise of statutory construction.

When a federal court makes a decision based on its
perception of what is “deserved” — as first done in Eolas (399
F.3d at 1339), reiterated again in this case (Pet. App. 4a), and
quoted yet again in Union Carbide (425 F.3d at 1379), the
court has abandoned its judicial role of interpreting statutes
in favor of usurping the legislative function from the bench.
The Federal Circu’s decision in Eolas equating
“component” in § 271(f) to anything that could be a patented
invention, that court’s decision in this case redefining

“supplied” for purposes of software, and its decision in
Union Carbide extending § 271(f) to all process patents are
neither sound nor consistent with the policy choices already
reached and enacted by Congress.

Ill. Under A Proper Construction Of § 271(f),
Process Steps And Other Intangible
Information Are Not “Components” And Thus
Cannot Be “Supplied”

The above analysis establishing why § 271(f) does
not apply to patented processes is directly significant to the
two questions presented by this case. First, this Court should
not construe “component” for purposes of § 271(f) as
including either process steps or a material or apparatus used
in practicing a patented process. As Congress clearly did not
provide or intend for the term “component” to encompass
such things, this Court should reject the Federal Circuit’s

19

naked assumption that it did. Second, the statutory language
reflects Congress’ realization that processes and process
steps are intangible, and as such, they cannot be supplied. As
used by Congress, “component” is properly limited to
tangible items that can be “supplied” and “combined” to
make patented products, whether or not such modifiers
appear in the statute.

Stated another way, while a process can be a
“patented invention” under § 101, a process does not have
“components” for purposes of § 271(f). As the Federal
Circuit explained in N7P, the very nature of a process
invention may compel a different result under § 271(f) even
though the statute does not expressly limit the type of
invention covered. 418 F.3d at 1322. Properly understood,
no other limitation on the term “component” needed to have
been expressed in § 271(f) to exclude intangible items and

patented processes from its scope.9

As explained in N7P, “{a] method, by its very nature,
is nothing more than the steps of which it is comprised.” Jd.
at 1322. Implicitly recognizing that process steps are
intangible, the Federal Circuit in N7P correctly observed that
“it is difficult to conceive of how one might supply or cause
to be supplied all or a substantial portion of the steps of a
patented method in the sense contemplated by the phrase
‘components of a patent invention’ in section 271(f).” Jd.
The reason for the court’s conceptual difficulty should be

> In that regard, the parties are incorrect in assuming or asserting that
Congress did not provide a specific meaning for “component.” See, e.g.,
Petition, at 15-16 (using general dictionary definition); Brief in
Opposition to Petition, at 13-14 (asserting that “Congress did not
specifically define the word ‘component””); Brief for United States as
Amicus Curiae (“U.S. Brief”), at 7 (asserting that “[b]ecause the statute
does not define the term ‘component,’ the term has its ‘ordinary or
natural meaning”). As shown, the statute defines the term at least by
demonstrating what it is not—as used in §271(c) and § 271(f), a
“component” for purposes of the patent statute cannot be intangible and
cannot be “a material or apparatus used in practicing a patented process.”

20

apparent—to the extent that process steps, software, design
information, data, knowledge, or ideas remain in intangible
form, they cannot be components of anything, including
patented inventions.

For that reason, the Federal Circuit in N7P properly
held that the defendant’s supply of products, such as its
handheld BlackBerry® devices, to customers in this country
did not constitute supplying or causing to be supplied in this
country any steps of a patented process invention for
combination outside the United States so as to infringe the
asserted method claims. 418 F.3d at 1322-23. Although not
expressly recognized in N7P, the additional reason for that
conclusion is that “materials or apparatus for use in a patent
process” are not “components” as that term was defined by
Congress for purposes of § 271(f).

The Federal Circuit’s unsupported assumption first
announced in Eolas that intangible software can be a
“component” is therefore incorrect. Indeed, as revealed in
NTP, the product claim at issue in Eolas was directed to a
software product claimed as comprising “a computer usable
medium having computer readable program code physically
embodied therein” and “computer readable program code.”
418 F.3d at 1322. Thus, by its very terms, the product claim
in Eolas reflected that allegedly intangible software can only
be patentable when claimed in a tangible, physical form; i.e.,
a computer usable medium, such as a hard drive or disk,
having the program code or software physically embodied
therein. Hence, for purposes of the patent laws, this Court
should hold that software cannot be either a “patented
invention” or a “component” absent a physical embodiment
of such computer code.

Viewed in that light, the Federal Circuit’s decisions in
Pellegrini v. Analog Devices, Inc., 375 F.3d 1113 (Fed. Cir.
2004), and Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367
(Fed. Cir. 2003), become instructive. In Pellegrini, the
Federal Circuit held that § 271(f) “applies only where

21

components of a patent invention are physically present in
the United States” and that “there can be no liability under
§ 271(f)(1) unless components are shipped from the United
States for assembly.” 375 F.3d at 1117. Clearly, intangibles
such as process steps, information, or designs cannot be
“physically present” or “shipped” or “combined” into
products unless in tangible form.

In Bayer, the Federal Circuit held that the data
obtained in other countries allegedly using patented
processes to screen for potential drug candidates was not a
“product” for purposes of § 271(g). 340 F.3d at 1371-72
(also noting that the statutory terms were “consistent in
referring to tangible objects and not intangibles such as
information”). The court further reasoned that the liability
exception in § 271(g) where an accused product “becomes a
trivial and nonessential component of another product” also
appears to contemplate “a physical product.” 340 F.3d at
1373. Once again, while instructions, data, and information
become tangible when written down or recorded, that type of
physical embodiment cannot transform those intangibles into
“products” of patented processes or “components” of
patented processes.

Once it is understood that software can only be
recognized by the patent laws when in tangible form, the
flaws in the Federal Circuit’s interpretations of § 271(f)
should become obvious. Nevertheless, Petitioner’s central
premise that its software code is intangible as long as it is
uncoupled from any storage medium or computer (Pet. 3)
may not fully answer the questions presented. Clearly, the
software code is in a tangible form when it is embodied on

© Having accepted the Federal Circuit’s mistaken view of “component,”
Respondent seemingly agrees with Petitioner that its software is
intangible (e.g., Supplemental Br. of Respondents, at 1, 2, 3, 4). If this
Court agrees, the Federal Circuit could be reversed on that basis because
intangible information, whether ideas, designs, or software, is not a
“component” of a patented invention for purposes of § 271(f).

22

the golden master disk that is exported to other countries, and
copies of that code are tangible after the copies are loaded
onto physical structures within the computers assembled in
foreign countries. However, it is undisputed that Microsoft’s
golden master disks are never themselves combined into any
product or system in another country and that the separate
computer drives or disks containing the copied software were
never physically in the United States after the software was
loaded. Therefore, under the proper interpretation of
“component” and “supplied,” there can be no liability under
U.S. patent law with respect to any computer systems falling
within the respondent’s asserted product claims that are
assembled entirely overseas and never subsequently imported
into the United States.

Based on an inapplicable general definition of
“component,” the United States argues that “the software
copy that is actually loaded onto the computers is a part,
element, or ingredient of the patented invention.” U.S. Brief,
at 8. However, that too is overbroad and reflects inexact
terminology. If the “patented invention” in question is a
claimed product or system, the specific copy of the software
that is so loaded on the computer may be a “component” of
the patented invention. However, for the reasons stated, if
the “patented invention” at issue is a process or method, the
software even as loaded on a computer structure is still not
part of the patented process, but is merely a material or
apparatus for use in practicing the process and henc> not a
“component” at all.

The United States otherwise agrees that, for purposes
of § 271(f), software must have “physical existence” or be
“physically embodied” in a computer structure in order for
the software to work and for the patented system containing
the software to have been assembled. U.S. Brief, at 9. While
the United States insists that the software remains
“intangible” even after it has been loaded onto tangible,
physical computer parts to create the specific-purpose
apparatus recognizable under the patent laws, the outcome

23

here is the same either way. If software is deemed to be
intangible in all contexts, then it cannot be a “component”
under § 271(f) as a matter of law. If software can be a
“component” but only when it is represented in tangible
form, then such component cannot be divorced from the
particular physical media on which it is embodied. In that
(case, the only components “supplied” by Microsoft in or
from the United States are its golden master disks which are
never combined with anything outside the United States in a
manner that would infringe Respondent’s asserted product or

system claims.

The Federal Circuit’s attempt to redefine the statutory
term “supplied” to encompass the act of copying solely in
“the context of software distribution” (Pet. App. 6a) cannot
be accepted. Words in a statute must be construed to have a
single meaning. Even where a statute is ambiguous, the
agency or court tasked with its interpretation must adopt one
of the possible meanings. Just as a federal statute cannot
have one meaning in California and another in Texas, the
term “supplied” in § 271(f) cannot have one meaning for
software copied overseas to be incorporated into patented
computer products and another meaning for all other
“components.” Thus, by recognizing software must be in
tangible form to be a “component” under § 271(f), the
Federal Circuit’s fluid approach to interpreting “supplied”
based on the technology at issue is avoided.

If, after § 271(f) was enacted, the overseas purchaser
of the patented shrimp deveining device in Deepsouth had
used the exported and unassembled pieces to make 99
identical copies of each piece that had been shipped from the
United States, and thus assembled a total of 100 such devices
for use or sale outside the United States, there still should be
liability for only one act of infringement under U.S. law, not
for »me hundred. The overseas copying of a software
“component” to be combined into a patented product or
system cannot be treated differently under the same statutory
terms than would be the overseas copying of the physical

24

components of any other “machine, manufacture,
combination, or composition.”

If “supplying” includes foreign copying of all U.S.-
originated software, then the term necessarily would
encompass foreign copying of any and all “components” of
patented products. By the Federal Circuit’s own admission,
that is not what it held. Pet. App. 6a. For the reasons stated
quite adequately elsewhere, that software-specific and result-
oriented interpretation of “supplied” cannot be allowed to
remain the law. See Pet. App. 1la-19a, at 13a (Rader, J.,
dissenting) (“copying and supplying are different acts, and
one act of ‘supplying’ cannot give mise to liability for
multiple acts of copying”); Reply Br. for Pet. 8-10; U.S.
Brief, at 10-18.

The flaws in the Federal Circuit’s reasoning can be
demonstrated using the court’s own analogy. According to
the Federal Circuit, uploading a single copy of software to a
server on the Internet should be sufficient to create liability
for any number of exact copies that are downloaded because
the server “supplies” the software to the user’s computer.
Pet. App. 6a. However, while each copy downloaded from
the server may result in a “supply” of the software to each
individual user, the statute also requires that such supply be
“in or from the United States.” The Federal Circuit ignores
that if the server is located in a foreign country, and the
copies are being downloaded to locations outside this
country, the copies are not being supplied “in or from the
United States.” Similarly, if Microsoft’s golden master disks
are located in a foreign country when the foreign copies are
made, there simply has been no “supply” of the software
copies in or from the United States.

Finally, even if software code is transmitted
electronically from the United States to a foreign country,
only the particular media on which it is stored following such
transmission could be deemed a “component” supplied from
the United States if later combined directly into a patented

25

product or system. However, absent a separate transmission
of the software from the United States for each patented
computer system that is assembled, the software in each
system has not been supplied from the United States. If, as
occurred here, further copies of the initially transmitted
software are made overseas, those copies are embodied upon
separate and distinct computer structures and therefore have
not been supplied from the United States. To conclude
otherwise would ignore the express territoriality restrictions
in the statute, not to mention the presumption against
extraterritorial application of U.S. law. See Pet. 23-29; U.S.
Brief, at 16-17.

If § 271(f) is expanded to cover foreign copies of
software and all process and method paient it will
improperly interfere with the ability of many countries to
regulate their own commercial affairs. As one example,
while business methods are patentable in this country, the
European Patent Convention (“EPC”) has excluded business
methods from patent protection.’ If the Federal Circuit’s
interpretation of § 271(f) is upheld, a U.S. company that
supplies software to the England could be held liable for
infringing a U.S. patent on a business method when the
software performing that method is used entirely in England,
even though England does not even allow patent protection
for business methods.

Similarly, the TRIPS agreement permits members to
exclude from patent protection “diagnostic, therapeutic, and
surgical methods for the treatment of humans or animals.”®

7 EPC, at Art. 52(2)c) (available at http://www.european-patent-
office.org/legal/epc/e/ar52 _html#A52) (last visited December 12, 2006).

8 Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS), Inchuding Trade In Counterfeit Goods, Apr. 15, 1994,
Marrakesh Agreement Establishing the World Trade Organization, Annex
1C, Legal Instruments — Results of the Uruguay Round vol. 31, 33 I.L.M.
1197 (1994), at Art. 27(3)(a).

26

Many countries, including those that adhere to the EPC, have
chosen not to extend patent protection to methods of
administering or treating patients.? Once again, the Federal
Circuit’s view of § 271(f) will interfere with these nations’
choices in how to obtain medicines and treat diseases. U.S.
patent protection on methods of treatment will effectively be
exported with any medicine shipped from the U.S. The
supply of unpatented medicine from the U.S. could be
enjoined for infringing a U.S. patent covering a method of
treatment even though the treatment occurs in a country that
consciously decided not to allow such patent protection.

Principles of international comity cannot be ignored.
See, e.g., F. Hoffman-La Roche Ltd. v. Empagran S.A., 542
U.S. 155, 164, 174 (2004); Murray v. Schooner Charming
Betsy, 6 U.S. (2 Cranch) 64, 118 (“an act of Congress ought
never to be construed to violate the law of nations if any
other possible construction remains”). Historically, U.S.
patent law has been interpreted to limit its extraterritorial
reach. See, e.g., Brown v. Duchesne, 60 U.S. (How.) 183,
197 (1857); Dowagiac Mfg. Co. v. Minn. Moline Plow Co.,
225 U.S. 641, 650 (1915). There is no basis for the Federal
Circuit’s expansive re-interpretation of §271(f) that
incorrectly and improperly interferes with the commerce and
laws of other sovereign nations, whether with respect to
application of their own patent laws or in respecting that
other countries may have elected not to extend patent
protection as broadly as the United States.

9 See, e.g., EPC, at Art. 52(4) (available at http://www.european-patent-
office.org/legal/epc/e/ar52._html#A52) (last visited December 12, 2006).

27
CONCLUSION

For the foregoing reasons, the decision of the United
States Court of Appeals for the Federal Circuit should be
reversed.

Respectfully submitted.

RICHARD L. STANLEY
Counsel of Record

JOHN D. NORRIS

HOWREY LLP

1111 Louisiana St., 25 Floor

Houston, TX 77002

(713) 787-1400

Counsel for Amicus Curiae
Shell Oil Company

DECEMBER 15, 2006

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0243%3A28. Public record. Not legal advice.